shutterstock-193037018-web
Lightspring / Shutterstock.com
26 June 2014Americas

BIO 2014: Post-Myriad patent rejections 'incredibly case-specific'

Patent rejections based on 35 USC §101, which relate to patent eligibility, are “incredibly case-specific”, making it difficult to identify trends or draw broad conclusions, said Matthew McFarlane, a partner at Robins, Kaplan, Miller & Ciresi LLP at the BIO International Convention yesterday (Wednesday).

Discussing the findings of the Bloomberg BNA report released earlier yesterday on the impact of the Myriad and Prometheus decisions, a report he co-authored with fellow Robins, Kaplan lawyer Tara Sharp and John Aquino of Bloomberg BNA, McFarlane suggested that that the US Supreme Court had later applied the two decisions, handed down in 2013 and 2012 respectively, more broadly than perhaps originally intended.

McFarlane and his co-authors reviewed 1,500 patent applications made between April 2011 and March 2014 to deliver their snapshot of patentability and section 101.

We did the survey to give [the industry] an idea of what the patent office is doing, said McFarlane, adding that he hoped they could generate a set of statistics based on the report to provide a greater understanding of what to expect from the office.

They found far more rejections made on the basis of section 101 than the “few dozen” they expected–380–but could not find any trends in the rejections, which seemed to come on a case-by-case analysis.

“There has to be some creativity on the examiners' side in respect of what to do,” McFarlane said.

The report also found that section 101 was not always the first point considered by the examiner when assessing patent eligibility, and appeared to arise at any time in the process.

He said that the “relatively high” rate of rejection is likely to continue.

Hans Sauer, an associate general counsel for BIO, described the judicial developments as “unstable”, and inconsistent with the rest of the world’s practices.

“It’s a problem that won’t go away for a while,” he added.

The 2014 BIO International Convention runs from June 23 to June 26 in San Diego.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Americas
25 June 2014   The American public's access to new and effective medicines could be at risk as a result of the US Supreme Court's decisions in the Prometheus and Myriad cases, and the resulting guidance for examiners from the USPTO, according to a report presented to the 2014 BIO International Convention in San Diego today.

More on this story

Americas
25 June 2014   The American public's access to new and effective medicines could be at risk as a result of the US Supreme Court's decisions in the Prometheus and Myriad cases, and the resulting guidance for examiners from the USPTO, according to a report presented to the 2014 BIO International Convention in San Diego today.

More on this story

Americas
25 June 2014   The American public's access to new and effective medicines could be at risk as a result of the US Supreme Court's decisions in the Prometheus and Myriad cases, and the resulting guidance for examiners from the USPTO, according to a report presented to the 2014 BIO International Convention in San Diego today.